Top 10 IP KEYS for value creationHasit seth @ ACTIV 2010<br />1st October 2010, PUNE – Venture Center<br />
Basics<br />Using IP as a strategy tool in value creation<br />Understanding risk-reward pattern underlying IP Rights<br /...
Key 1: patents RIGHTS ARE NOT ABSOLUTE <br />Patent is assumed to be valid. <br />Patent validity can be challenged at any...
Unenforceability<br />Inequitable Conduct  (IC)<br />Formerly,“Fraud on Patent Office”<br />Failure to disclose material i...
Materiality and intent<br />Require: (1) Materiality and (2) Intent<br />Check: Was all relevant prior art known to applic...
Lemelson litigation<br />Lemelson filed “machine vision” patents in 1950s; a robotic device + barcodes; collected over $1....
Lemelson<br />He kept on filing “contiuation” applications delaying prosecution to create “submarine” patents.<br />Courts...
Key 2: Patent quality<br />Do you measure patent quality?<br />How patent quality can be measured?<br />Is it limited to t...
Patent quality Factors<br />Time to market<br />Market Size of Opportunity<br />Patent’s impact on that Market Size <br />...
Key 3: LANDSCAPE YOUR IP EFFORTS<br />An underestimated tool<br />Make it a required step in the INVENTING process<br />IP...
Landscape before you invent<br />Landscaping generates newer ideas while searching the patent databases<br />Teach landsca...
Key 4: Think portfolio,  not “a patent”<br />Do you have an institutional IP portfolio strategy?<br />Few single patents (...
Key 5: IP SIEGE Strategy <br />Building a portfolio that can lay a “siege” over a pioneering or a valuable concept<br />Si...
Key 6: negotiating wise licenses<br />A licensing “policy” is not enough<br />License negotiation is a dynamic act, not a ...
Key 7: Negotiation and analytics<br />How analytical is your negotiation? <br />Afraid of “Analysis Paralysis”?<br />Do yo...
Key 8: Risk sharing <br />Current model is to sell or license technology and get revenues<br />Very little risk participat...
Risk sharing<br />Companies don’t license more technology because:<br />Can’t see an alignment to their business<br />Can’...
Key 9: Timing<br />Patent’s life is limited <br />For a 16-17 year effective patent “life” have stages with different lice...
Key 10: policy foresight<br />India’s IP policies as in laws, rules, regulations are being crystallized in current times<b...
Policy example: S.111 of Indian patent Act<br />“…damages or an account of profits shall not be granted …[if the infringer...
Policy<br />If rhetoric can drive home the point:<br />If no damages are available in infringement suits, nobody will file...
Thank you<br />Any questions?<br />Hasit Seth http://in.linkedin.com/in/hasit<br />Other presentations at: http://www.slid...
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Hasit ACTIV 2010 Technology Commercialization Workshop

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ACTIV 2010 was a technology commercialization workshop held at Venture Center in Pune in September 2010. It was supported by British High Commission, Venture Center, Department of Science and Technology, Government of India. The audience were key scientists involved in commercializing and licensing their research work.

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Hasit ACTIV 2010 Technology Commercialization Workshop

  1. 1. Top 10 IP KEYS for value creationHasit seth @ ACTIV 2010<br />1st October 2010, PUNE – Venture Center<br />
  2. 2. Basics<br />Using IP as a strategy tool in value creation<br />Understanding risk-reward pattern underlying IP Rights<br />What Patents give, may be taken away by a bad license<br />Licensing is an endurance race, not a 100m dash<br />(c) Hasit Seth, 2010<br />
  3. 3. Key 1: patents RIGHTS ARE NOT ABSOLUTE <br />Patent is assumed to be valid. <br />Patent validity can be challenged at any time during its term<br /> Invalidity due to prior-art is a well-known risk, but unenforceability is not as well-known.<br />(c) Hasit Seth, 2010<br />
  4. 4. Unenforceability<br />Inequitable Conduct (IC)<br />Formerly,“Fraud on Patent Office”<br />Failure to disclose material information to the patent office; Submitting misleading information<br />(c) Hasit Seth, 2010<br />
  5. 5. Materiality and intent<br />Require: (1) Materiality and (2) Intent<br />Check: Was all relevant prior art known to applicant disclosed to patent office?<br />Aggressive inferences from experimental data – don’t be too adventurous or imaginative! <br />More material the information, lesser is the intent required, and vice-versa.<br />(c) Hasit Seth, 2010<br />
  6. 6. Lemelson litigation<br />Lemelson filed “machine vision” patents in 1950s; a robotic device + barcodes; collected over $1.5 billion in royalties <br />A prolific inventor with 600+ patents, most of them self-written! <br />(c) Hasit Seth, 2010<br />
  7. 7. Lemelson<br />He kept on filing “contiuation” applications delaying prosecution to create “submarine” patents.<br />Courts ultimately held his machine vision patents UNENFORCEABLE due to delaying the process but found no inequitable conduct.<br />Note that he had just used the then existing PTO rules, so he had not done any fraud.<br />(c) Hasit Seth, 2010<br />
  8. 8. Key 2: Patent quality<br />Do you measure patent quality?<br />How patent quality can be measured?<br />Is it limited to the quality of claims tested against prior art<br />Correlation of patent quality & commercial impact<br />(c) Hasit Seth, 2010<br />
  9. 9. Patent quality Factors<br />Time to market<br />Market Size of Opportunity<br />Patent’s impact on that Market Size <br />Blocker, Enabler, Disruptor, or Pioneer<br />Quantify the impact<br />“Push” to customers, or “Pull” from customers?<br />(c) Hasit Seth, 2010<br />
  10. 10. Key 3: LANDSCAPE YOUR IP EFFORTS<br />An underestimated tool<br />Make it a required step in the INVENTING process<br />IP Landscaping is not an invalidating prior-art search<br />Quite rare - landscaping by correlating patent information to marketing information – Hard but it is a GOLD MINE ! <br />(c) Hasit Seth, 2010<br />
  11. 11. Landscape before you invent<br />Landscaping generates newer ideas while searching the patent databases<br />Teach landscaping to inventors <br />Subject a landscape to a business opportunity analysis using decision analyses tools<br />(c) Hasit Seth, 2010<br />
  12. 12. Key 4: Think portfolio, not “a patent”<br />Do you have an institutional IP portfolio strategy?<br />Few single patents (those in pharmaceuticals) have a market controlling power <br />How will your patent portfolio develop in next few years?<br />Is your patent pipeline running dry?<br /> Good portfolios are not about numbers alone. <br />(c) Hasit Seth, 2010<br />
  13. 13. Key 5: IP SIEGE Strategy <br />Building a portfolio that can lay a “siege” over a pioneering or a valuable concept<br />Single siege: Patent pools such as MPEG-LA for MPEG standards.<br />Multiple technology sieges are strategies of company like Intellectual Ventures<br />(c) Hasit Seth, 2010<br />
  14. 14. Key 6: negotiating wise licenses<br />A licensing “policy” is not enough<br />License negotiation is a dynamic act, not a routine <br />Licensing strategies need to be sharpened:<br />How much to ask for upfront payments?<br />One off or sustaining relationships? How much “relationship sustenance discount” can afford?<br />Is not licensing an invention affordable in a case?<br />(c) Hasit Seth, 2010<br />
  15. 15. Key 7: Negotiation and analytics<br />How analytical is your negotiation? <br />Afraid of “Analysis Paralysis”?<br />Do you use any decision analysis tools to negotiate?<br />Decision Trees, Game theoretic modeling, What-if scenarios…<br />All models have limits and flaws, but intuition is not a model ! <br />(c) Hasit Seth, 2010<br />
  16. 16. Key 8: Risk sharing <br />Current model is to sell or license technology and get revenues<br />Very little risk participation happens<br />Joint-ventures or special purpose vehicles where a lab/scientist brings technology to table and capital is lent by others<br />(c) Hasit Seth, 2010<br />
  17. 17. Risk sharing<br />Companies don’t license more technology because:<br />Can’t see an alignment to their business<br />Can’t afford the risks even if alignment is present<br />Can you share in risk by investing technology?<br />Licensing converted in to co-investing is risk sharing<br />(c) Hasit Seth, 2010<br />
  18. 18. Key 9: Timing<br />Patent’s life is limited <br />For a 16-17 year effective patent “life” have stages with different licensing strategies<br />(c) Hasit Seth, 2010<br />
  19. 19. Key 10: policy foresight<br />India’s IP policies as in laws, rules, regulations are being crystallized in current times<br />Your voice can shape these policies<br />Policies rooted in “fear” of others taking away our crown jewels will not lead to any good policies.<br />(c) Hasit Seth, 2010<br />
  20. 20. Policy example: S.111 of Indian patent Act<br />“…damages or an account of profits shall not be granted …[if the infringer] proves that at the date of infringement he was NOT AWARE and HAD NO REASONABLE GROUNDS FOR BELEVING PATENT EXISTED”<br />How will anyone ever get realistic damages in India? <br />(c) Hasit Seth, 2010<br />
  21. 21. Policy<br />If rhetoric can drive home the point:<br />If no damages are available in infringement suits, nobody will file for patents for anything valuable<br />If there are no filings, no question of commercialization using IP as a security cover.<br />(c) Hasit Seth, 2010<br />
  22. 22. Thank you<br />Any questions?<br />Hasit Seth http://in.linkedin.com/in/hasit<br />Other presentations at: http://www.slideshare.net/hasits<br />ACTIV Workshop: http://www.venturecenter.co.in/activ/workshop.php<br />(c) Hasit Seth, 2010<br />

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